IPONZ has reviewed its practice with regard to the eligibility for registration of trade marks consisting of surnames, as a consequence of the recent decision of the European Court of Justice in the case of Nichols plc v Registrar of Trade Marks (16 September 2004 – Case C-404/02), where the High Court of England and Wales sought clarification as to the distinctiveness of surnames as trade marks.
In order to implement a change in practice, clause 6.1 of the Practice Guidelines to Absolute Grounds Distinctiveness will be amended as stated below.
6.1 Surnames
A “name” is included in the definition of “sign” in section 5 of the Act. It follows from this that surnames are potentially registrable as trade marks. A surname will not be registrable, however, if it has no distinctive character. Surnames that have no distinctive character are not registrable pursuant to section 18(1)(b) of the Act.
The European Court of Justice (ECJ) in Nichols plc v Registrar of Trade Marks ¹ has provided guidance on how to determine whether a surname has the required level of distinctive character for registration as a trade mark. In reaching its decision the Court held that the criteria for assessing the distinctive character of a trade mark consisting of a surname should be no different from that applicable to any other category of mark. It follows therefore that there will be circumstances in which common surnames lack the required distinctive character for registration as a trade mark.
The ECJ did not provide guidance as to what specific factors should be taken into consideration when determining the distinctive character of a common surname. However, the court did state that a ”stricter general criteria of assessment based on the following cannot be applied to such trade marks”:2
- a predetermined number of persons with the same name, above which that name may be regarded as devoid of distinctive character,
- the number of undertakings providing products or services of the type covered by the application for registration, or
- the prevalence or otherwise of the use of surnames in the relevant trade.
The court also confirmed that registration of a surname cannot be refused for the purpose of ensuring that no advantage is afforded to the first applicant for its registration as a trade mark.3
Therefore IPONZ no longer raises concerns as to the eligibility of a mark that consists of a surname solely on the basis that the surname appears a certain number of times on the New Zealand Electoral Roll. As with other categories of marks IPONZ considers whether the mark is capable of distinguishing the goods or services of one trader from the same or similar goods or services supplied by other traders.
Although IPONZ will generally not have any specific information as to individual traders or industries, when considering the eligibility of marks consisting of surnames facts which are generally known may be taken into consideration. For example, it is common for suppliers of trade services such as plumbing and electrical services to use their surnames as “badges of origin”. On this basis, IPONZ might conclude that a mark that consists of a common surname such as SMITH when used in relation to “plumbing” or “electrical services” would not be capable of distinguishing the services of one trader from the same or similar services supplied by other traders.
The plural or possessive form of a surname will be treated in the same way as the surname itself.
6.1.1 Surnames with other descriptive meanings
Where a trade mark consists of a surname which also has another meaning, that meaning may give rise to an objection to registration under section 18(1)(c) of the Act. For example, the trade mark BROWN would face an objection under that section of the Act if applied for in relation to “sauces” because it is a word which may serve, in trade, to designate a kind of sauce. Similarly, the same word would not be acceptable as a trade mark for “paints” because it designates a characteristic of those goods namely colour.
6.1.2 Surnames with initials and full personal names
Trade marks that consist of full names or surnames with initials will be treated in the same way as surnames alone. The addition of initials or a forename to a trade mark which consists of a surname will generally have the effect of adding distinctive character to the mark. The addition of these elements mean that the mark will have a greater capacity to distinguish the goods or services of one undertaking than if the mark applied for consisted of the surname alone. It is therefore most unlikely that IPONZ will object to the registration of such signs as trade marks.
Applicants who apply for a trade mark consisting of a full name should be aware that the application may be subject to an objection under section 23 of the Act. For more information on section 23 and the requirements under that section, see the Practice Guidelines on Names and Representations of Persons.
6.1.3 Single forenames
Trade marks that consist of forenames will normally be accepted as having sufficient distinctive character for registration. However, where the goods for which registration is sought are of a kind traditionally adorned with common forenames an objection may be raised under section 18(1)(b) of the Act. For example, goods such as mugs, jewellery, keyrings and certain stationery items are commonly adorned with forenames. In respect of those goods, consumers are likely to percieve the name appearing on those products as being merely decorative rather than having the capacity to communicate that the goods originated from a certain undertaking.
Similarly, in some trades it is common for different undertakings to use the same forename in connection with the services that they provide. For example, it is common for traders who supply such services as restaurant and café services, hairdressing services and beauty salon services to use forenames as brand names. As a result of the Nichols4 decision, where a trade mark consists of a forename IPONZ will only raise an objection under section 18(1)(b) where there is sufficient evidence to show that forenames are commonly used in that trade and that consumers are unlikely to perceive the forname as distinguishing the services of one undertaking from the similar services of another undertaking.
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